Ex Parte Milstein et al

Board of Patent Appeals and Interferences

Feb 29, 2012

10668438 (B.P.A.I. Feb. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/668,438 09/23/2003 David Milstein M61.12-0545 2338
27366 7590 03/01/2012
WESTMAN CHAMPLIN (MICROSOFT CORPORATION)
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
03/01/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID MILSTEIN and LINDA CRIDDLE

___________

Appeal 2009-014053
Application 10/668,438
Technology Center 2400
____________

Before DENISE M. POTHIER, DAVID M. KOHUT, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2 and 6-25. Claims 3-5 and 26-60 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants’ invention relates to a client-server interaction scheme that
enables content to be retrieved, or a task to be executed, through user
instructions embedded in dialog-based user communication with a
specialized simulated entity. The scheme involves communication between
a user device having a dialog-based user interface and a communication
service provider. A user utilizes traditional, dialog-based, person-to-person
type interaction to request and receive information from a non-human
source. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A computer implemented method for task execution
based on dialog-based communication with a communication service,
comprising:
receiving dialog from a user, the dialog being directed to a
simulated entity;
analyzing the dialog to identify a command;
performing a task on the user’s behalf based on the command;
determining whether the user is authorized to utilize the
application necessary to complete the task, and performing the task
only if the user is authorized;
presenting the user with an opportunity to become authorized
when the user is not authorized to utilize the application necessary to
complete the task; and
wherein presenting the user with an opportunity to become
authorized comprises presenting the user with an opportunity to
purchase access.

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Claims 1, 2, 6-8, 13-19 and 21-25 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Leber (U.S. Patent Application Publication
No. 2003/0182391 A1), Yairi (U.S. Patent Application Publication No.
2004/0078424 A1) and Kay (U.S. Patent Application Publication No.
2003/0074410 A1).
Claims 9-12 and 20 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Leber, Yairi, Kay and Kennewick (U.S. Patent Application
Publication No. 2004/0193420 A1).1

ANALYSIS
Claims 1, 2, 6-8, 13-19 and 21-25
We are not persuaded by Appellants’ arguments (Br. 11-13) that the
combination of Leber, Yairi and Kay would not have rendered obvious
independent claim 1, which includes the disputed limitation “determining
whether the user is authorized to utilize the application necessary to
complete the task, and performing the task only if the user is authorized.”
The Examiner found that parsing a text portion of a message by the
chat-bot 125 of Leber corresponds to the claimed “task.” (Ans. 4; Leber,
¶ [0067].) The Examiner acknowledged that Leber does not disclose the
above-disputed limitation and, therefore, cited Yairi for teaching a value
added logic (VAL) module 109 to provide services including billing and
authentication (Ans. 5; Yairi, ¶ [0035]) and cited Kay for teaching checking
an access list to determine if services are granted or denied (Ans. 5; Kay,
¶¶ [0071]-[0075]). The Examiner concluded that “it would have been

1 We will not discuss the cancelled claims that the Examiner addressed in
the rejections. (See Ans. 4, 11.)
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obvious . . . to combine Yairi into Leber. . . . to overcome the shortcomings
of [short message service] SMS” (Ans. 5) and that “it would have been
obvious . . . to combine Kay into Leber-Yairi. . . . to avoid having the user
enter separate passwords for each service desired” (Ans. 6). We agree with
the Examiner.
Leber relates to “an Internet based personal information manager”
(¶ [0001]) that includes a chat-bot system remotely accessible through an
instant messaging (IM) software application (¶ [0026]).
Yairi relates to “[a] method and system for accessing one or more web
services (WS) from a mobile terminal using an instant messaging (IM)
client . . . .” (Abstract.) Yairi teaches that an instant message can be
directed to a web service by routing the instant message through a mobile
IM server 111 to an Instant Messaging Web Services (IM/WS)
Gateway 101. (¶ [0024].) One such web service is a value added logic
(VAL) module 109 that provides added services that include billing and
authentication. (¶ [0035].) In other words, Yairi teaches the claim
limitation “determining whether the user is authorized to utilize the
application necessary to complete the task.”
Kay relates to “a method and system for providing services via an
instant messaging service.” (¶ [0025].) In one embodiment, an interactive
agent includes several sub-services in which some sub-services are restricted
based on an access list. (¶ [0071]). In other words, Yairi teaches the claim
limitation “performing the task only if the user is authorized.”
The combination of Leber and Yairi is nothing more than
incorporating the known value added logic (VAL) module 109 of Yairi that
provides value added services such as billing and authentication with the
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known chat-bot system of Leber, to yield predictable results. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Similarly, the combination of
Leber, Yairi and Kay is nothing more than incorporating the known
interactive agent of Kay that restricts access to sub-services through the use
of an access list with the known combined system of Leber and Yairi, to
yield predictable results. Id. Thus, we agree with the Examiner (Ans. 5-6)
that modifying Leber to include the value added logic (VAL) module 109 of
Yairi and the interactive agent of Kay would have been obvious.
Appellants argue that “the Examiner seems to equate the claimed
‘task’ with [Yairi’s discussion of] registering with a portal before being
allowed to access an instant messaging system” but “that this logic is
flawed.” (Br. 12.) However, the Examiner cited Leber for teaching the
claimed “task,” rather than Yairi (Ans. 4).
Therefore, we agree with the Examiner that the combination of Leber,
Yairi and Kay would have rendered obvious independent claim 1, which
includes the limitation “determining whether the user is authorized to utilize
the application necessary to complete the task, and performing the task only
if the user is authorized.”
We are also not persuaded by Appellants’ arguments (Br. 12-13) that
the combination of Leber, Yairi and Kay would not have rendered obvious
independent claim 1, which includes the disputed limitations “presenting the
user with an opportunity to become authorized when the user is not
authorized to utilize the application necessary to complete the task” and
“wherein presenting the user with an opportunity to become authorized
comprises presenting the user with an opportunity to purchase access.”
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The Examiner found that the service controller 107 of Yairi that
combines multiple web service functions corresponds to the disputed
limitations. (See Ans. 9; Yairi, ¶ [0034].) We agree with the Examiner.
As discussed previously, Yairi teaches that the value added logic
(VAL) module 109 provides services that include billing and authentication.
(¶ [0035].) Yairi further teaches that a “[service controller] SC 107 can
combine multiple web service functions to provide enhanced services to IM
clients.” (¶ [0034].) Thus, Yairi teaches or suggests that billing and
authentication services can be combined, such that if a user is not
authenticated, that user has the opportunity to purchase access. (See
¶¶ [0034]-[0035].)
Therefore, we agree with the Examiner that the combination of Leber,
Yairi and Kay would have rendered obvious independent claim 1, which
includes the limitations “presenting the user with an opportunity to become
authorized when the user is not authorized to utilize the application
necessary to complete the task” and “wherein presenting the user with an
opportunity to become authorized comprises presenting the user with an
opportunity to purchase access.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2, 6-8, 13-19 and 21-25 depend from independent
claim 1, and Appellants have not presented any substantive arguments with
respect to these claims. Therefore, we sustain the rejection of claims 2, 6-8,
13-19 and 21-25 under 35 U.S.C. § 103(a) for the same reasons discussed
with respect to independent claim 1.
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Claims 9-12 and 20
We are not persuaded by Appellants’ arguments (Br. 14-16) that the
Examiner improperly combined Leber, Yairi, Kay and Kennewick.
The Examiner acknowledged that the combination of Leber, Yairi and
Kay does not disclose the limitations of dependent claims 9-12 and 20 and
therefore, cited Kennewick for teaching user specific profile data and an
automatic interactive dispatch for vehicles (Ans. 11; Kennewick, ¶¶ [0032],
[0071]). The Examiner concluded that “it would have been obvious . . . to
combine Kennewick into Leber. . . . to allow for natural language speech
queries or commands in a vehicular environment.” (Ans. 12.) We agree
with the Examiner.
Kennewick relates “to the retrieval of online information and
processing of commands through a speech interface in a vehicle
environment.” (¶ [0002].) The mobile interactive natural language speech
system can be used for “[c]ontrol of communications devices such as cell
phones, voice mail, fax systems, text or instant messaging systems . . . .”
(¶ [0044].) Kennewick teaches that the system uses profile information of a
user to minimize interaction with the user to deliver a response to a query.
(¶ [0032].) Kennewick also teaches an automatic interactive dispatch for
vehicles such that a vehicle operator uses the speech interface to request
services. (¶ [0071].)
Thus, incorporating the mobile interactive natural language speech
system of Kennewick with the combined system of Leber, Yairi and Kay
would provide the ability to control an instant message system in a vehicle
environment. See KSR, 550 U.S. at 417. Therefore, we agree with the
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Examiner (Ans. 12) that modifying Leber to include the mobile interactive
natural language speech system of Kennewick would have been obvious.
Appellants argue that “[t]he Examiner provides no explanation,
whatsoever, as to why it would be obvious to combine the teachings of all
four references . . . .” (Br. 14.) This argument is inaccurate. (See Ans. 11-
12, 16-17.) Moreover, as discussed previously, the various combinations of
Leber, Yairi, Kay and Kennewick are based on either combining known
elements to achieve predictable results or the improvement of a similar
device in the same way as in the prior art.
Therefore, the Examiner has properly combined Leber, Yairi, Kay and
Kennewick to reject dependent claims 9-12 and 20 under 35 U.S.C.
§ 103(a).
Accordingly, we sustain the rejection of dependent claims 9-12 and 20
under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 1, 2 and 6-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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